Patent Agent Bio

BCG Attorney Search; Houston (TX); Hybrid; USD 80,000 - 120,000; Full time

Job summary

A reputable law firm in Houston is seeking a skilled Patent Agent with a strong background in biomedical engineering or related fields. The role involves preparing patent applications, managing complex patent issues, and liaising with clients and the USPTO. Candidates should have at least 3 years of experience in patent prosecution and a solid understanding of patent documentation principles. This position offers a hybrid work arrangement and opportunities for professional development.

Benefits

Competitive salary based on experience

Opportunities for professional development

Collaborative and dynamic work environment

Qualifications

• 3+ years of experience in patent prosecution or related IP areas.
• Registered to practice before the USPTO or qualified to sit for the patent bar.

Responsibilities

• Prepare and draft patent applications, integrating scientific aspects of inventions.
• Act as a liaison between inventors and the USPTO throughout the patent application process.

Skills

Analytical

Problem-Solving

Communication

Research

Education

Bachelor’s degree in biomedical engineering

Master’s or Ph.D. in a related field

Tools

Microsoft Office

Job description

Job Overview:
A reputable law firm is seeking a highly skilled Patent Agent with a background in biomedical engineering, mechanical engineering, physics, material science, or related medical device technologies. The ideal candidate will have 3+ years of experience in patent prosecution and a working knowledge of patent portfolio analysis, due diligence, or other intellectual property transactional matters. The role involves preparing patent applications, responding to communications from the U.S. and foreign patent offices, and liaising with clients and the U.S. Patent and Trademark Office (USPTO). The candidate should be able to manage complex patent issues and contribute to the firm’s intellectual property practice.

Location:

• Houston, TX

Duties:

1. Prepare and draft patent applications, integrating scientific aspects of inventions.
2. Draft responses to communications from U.S. and foreign patent offices regarding scientific and factual matters.
3. Evaluate and report on technological aspects of inventions, conducting investigations on specific technologies as needed.
4. Discuss scientific details of inventions with clients and inventors.
5. Identify, analyze, and resolve complex patent issues and provide solutions.
6. Act as a liaison between inventors and the USPTO throughout the patent application process.
7. Communicate effectively with clients, staff, and PTO personnel via email, telephone, and face-to-face interactions.
8. Maintain professionalism and confidentiality in all communications with clients, lawyers, and staff.
9. Organize and prioritize tasks efficiently under tight deadlines.
10. Stay current with technology trends and make recommendations regarding technology needs.
11. Participate in continuing education to stay updated on patent prosecution issues and trends.
12. Manage and analyze data for lawyer and staff reports, distributing the reports as needed.

Requirements:

• 3+ years of experience in patent prosecution or related intellectual property areas.
• Bachelor’s degree in biomedical engineering, mechanical engineering, physics, material science, or related medical device technology (Master’s or Ph.D. preferred).
• Registered to practice before the USPTO or qualified to sit for the patent bar.
• Strong investigative, analytical, and problem-solving skills.
• In-depth knowledge of patent documentation principles, procedures, and standards.
• Familiarity with current and emerging technological trends in the field.
• Advanced knowledge of research methods, techniques, and resources.
• Ability to organize and prioritize multiple tasks under time constraints.
• Excellent oral and written communication skills for effectively conveying technical information.
• Proficiency in Microsoft Office (Word, Excel, Outlook) and time management software.
• Experience with prosecution docketing systems is a plus.
• Strong understanding of confidentiality and ethical responsibilities.
• Willingness to work additional hours as required to meet deadlines and handle peaks in workload.

Education:

• Bachelor’s degree in biomedical engineering, mechanical engineering, physics, material science, or a related field required.
• Master’s or Ph.D. in a related field preferred.

Certifications:

• Registered to practice before the U.S. Patent and Trademark Office (USPTO) preferred.
• Qualified to sit for the patent bar.

Skills:

• Expertise in patent prosecution and patent application preparation.
• Strong technical background in biomedical engineering, mechanical engineering, physics, or material science.
• Advanced research, analysis, and problem resolution skills.
• Ability to organize and prioritize tasks effectively under tight deadlines.
• Strong interpersonal skills with the ability to communicate complex technical information clearly.
• Proficiency in MS Office (Word, Excel, Outlook) and time management software.
• Familiarity with prosecution docketing systems is advantageous.
• Hybrid work arrangement (minimum of 3 days per week in the office, up to 2 days per week remote).
• Competitive salary based on experience.
• Opportunities for professional development and continuing education.
• Collaborative and dynamic work environment.